Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This action is in response to Applicant’s amendment filed January 20, 2026 in reply to the Non-final Office Action mailed October 20, 2025. Claims 20, 33, and 39 have been amended; claims 1-19, 21-29, 38, and 42 have been canceled; and no claims have been newly added. Claims 36, 37, and 41 have been withdrawn. Claims 20, 30-35, 39, and 40 are under examination.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the Non-final Office Action mailed October 20, 2025 is hereby withdrawn.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20, 30-35, 39, and 40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 is indefinite for the following reasons:
1. Claim 20 is directed to “a method” but never definitively defines what the method as a whole is actually for or intended to accomplish. One of ordinary skill in the art thus cannot definitively ascertain what, specifically, is necessarily being made, or is necessarily being treated, or is necessarily being accomplished, etc. by the method as a whole. The claimed method appears to require at least two steps, applying napropamide and planting a monocot cereal crop. While the claim states that the intended purpose of the specific step of applying the napropamide is to control a monocotyledonous weed of genus Alopecurus, this is not necessarily the purpose of the claimed method as a whole. For example, the claimed method as a whole could just as well be e.g. a method of promoting growth of a monocot cereal crop, or e.g. a method of enhancing monocot cereal crop seed germination. The claim cannot simply state that it’s a “method”. The claim must properly state what the method is for. Moreover, it is noted that since the claim never actually defines what the method is for, the claimed method cannot be properly evaluated for compliance with e.g. scope of enablement and other legal standards that depend on what the method is actually for or intended to accomplish.
2. Claim 20 stipulates that napropamide is “the sole active ingredient” that is applied to the locus. Since the claim never properly states what the method is actually for or intended to accomplish, one of ordinary skill in the art cannot definitively ascertain the metes and bounds of “active ingredient”. Since what the method is necessarily supposed to achieve or accomplish is undefined and unknown, the “active ingredient” that is supposed to facilitate this purpose is thus undefined and unknown. One of ordinary skill in the art thus cannot definitively ascertain what chemical compounds would fall within the scope of “active ingredient” for the purpose of achieving the undefined and unknown “method”. For example, is nitrogen an “active ingredient”? Is water? Since one of ordinary skill in the art cannot definitively ascertain the metes and bounds of “active ingredient”, one of ordinary skill in the art cannot definitively ascertain what chemical compounds are necessarily excluded from being applied to the locus.
3. Further, because claim 20 stipulates that napropamide is the “sole active ingredient”, and also states the intended purpose of applying mapropamide at the application rate of 400 to 700 g/Ha, i.e. to control a monocotyledonous weed of genus Alopecurus, one of ordinary skill in the art thus cannot definitively ascertain whether the “sole active ingredient” limitation applies to the method as a whole (as outlined in section 2, supra), or rather in fact applies only to the purpose of controlling a monocotyledonous weed of genus Alopecurus. In other words, one of ordinary skill in the art cannot definitively ascertain whether napropamide is the sole active ingredient that can be applied in the method as a whole, or rather the sole active ingredient applied for the specific purpose of controlling a monocotyledonous weed of genus Alopecurus, but that the method provides for the application of additional active ingredients for a different intended purpose, such as controlling other weeds, including controlling other monocotyledonous weeds of a genus other than Alopecurus.
***For examination at this time, the claim is being interpreted as the napropamide is the sole active ingredient applied for the intended purpose of controlling a monocot weed of the genus Alopecurus, but that other actives can be applied as well, including actives for the intended purpose of controlling monocot weeds other than Alopecurus.
4. Claim 20 requires applying napropamide to a locus of a monocot cereal crop, wherein the monocot cereal crop is either already planted at the locus (but may not have yet emerged), or, alternatively, is not yet even planted at the locus. The claim states that the intended purpose of applying the napropamide is to “control a monocot weed of genus Alopecurus”. One of ordinary skill in the art cannot definitively ascertain whether the referenced monocot weed of genus Alopecurus is necessarily even physically present at the locus at all. In other words, does the claim encompass treating a monocot weed of genus Alopecurus that is already physically present at the locus, or preventing a monocot weed of genus Alopecurus from being physically present at the locus, or both.
***For examination at this time, the claim is being interpreted as the napropamide is being applied to a locus that either can contain a monocot weed of genus Alopecurus that is already physically present at the locus, or does not contain any monocot weed of genus Alopecurus physically present at the locus at all. In other words, no monocot weed of genus Alopecurus need be physically present at the locus at all.
5. Claim 20 provides that at the time of applying the napropamide, the monocot cereal crop is “either present at the locus or is planted at the locus after application of said napropamide to the locus and is planted at the locus at a depth of at least 2 cm”. One of ordinary skill in the art, from the grammatical structure of this phrase, cannot definitively ascertain whether the “planted…at a depth of at least 2 cm” limitation applies only to the case wherein the monocot cereal crop is planted at the locus after application of said napropamide to the locus, or rather is present in both cases, i.e. in the case wherein the monocot cereal crop is already present at the locus when the napropamide is applied, and also in the case wherein the monocot cereal crop is planted at the locus after application of said napropamide to the locus.
Claims 30-35, 39, and 40 are indefinite for depending from an indefinite claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20, 30-35, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Shroff et al. (U.S. Patent Application Pub. No. 2014/0274717), in view of Zhang (Chinese Patent Application Pub. No. CN 108990990 A) and Wiersma et al. (Minnesota Crop News [online]; 2018).
Applicant Claims
Applicant’s elected subject matter is directed to “a method” comprising applying to a locus where a winter wheat crop has been planted but is not yet emerged a composition comprising D-napropamide and an exicipient to control a monocot weed of the genus Alopecurus that is resistant to ethofumesate; wherein the D-napropamide is applied in the amount of 400-700 g/Ha, and wherein the winter wheat crop is planted at a depth of at least 2 cm.
***For examination at this time, the “method” is being broadly interpreted as a method of controlling weeds at the locus, which is being interpreted as encompassing within its scope preventing the weed from being present at the locus. In other words, the weed being controlled need not be present at the locus at the time of napropamide application, or at any time prior to or after the application.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Shroff et al. disclose a method of controlling a weed at a locus where a crop has been planted but has not yet emerged (i.e. pre-emergence) comprising applying to the locus a composition comprising napropamide and an exicipient; wherein the composition can comprise one or more additional herbicides, the weed being controlled is e.g. of the genus Alopecurus, and the napropamide is D-napropamide and can be applied e.g. in the amount of 450-600 g/Ha (abstract; paragraphs 0006, 0015, 0017, 0018, 0020, 0022-0024, 0030, 0034-0038, 0041, 00430056, 0058, 0062, 0069; Examples 4 and 5).
Zhang discloses that an herbicide composition comprising napropamide and an excipient can be applied to a winter wheat crop for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production (see e.g. Derwent abstract).
Wiersma discloses that planting winter wheat seeds at a depth of 1-1.5 inches (i.e. 2.54-3.81 cm; i.e. “at least 2 cm”) in the fall is recommended to allow for adequate moisture from rain, and to allow for faster emergence when temperatures are rapidly declining, whereby the winter wheat crop has the best chance to survive, overwinter, and become productive.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Shroff et al. do not explicitly disclose that the crop planted at the locus is winter wheat at a depth of at least 2 cm. These deficiencies are cured by the teachings of Zhang and Wiersma.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Conclusion
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Shroff et al., Zhang, and Wiersma, outlined supra, to devise Applicant’s claimed method.
Shroff et al. disclose a method of controlling a weed at a locus where a crop has been planted but has not yet emerged (i.e. pre-emergence) comprising applying to the locus a composition comprising napropamide and an exicipient; wherein the composition can comprise one or more additional herbicides, the weed being controlled is e.g. of the genus Alopecurus, and the napropamide is D-napropamide and can be applied e.g. in the amount of 450-600 g/Ha. Since Zhang discloses that an herbicide composition comprising napropamide and an excipient can be applied to a winter wheat crop for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production; and since Wiersma discloses that planting winter wheat seeds at a depth of 1-1.5 inches (i.e. 2.54-3.81 cm; i.e. “at least 2 cm”) in the fall is recommended to allow for adequate moisture from rain, and to allow for faster emergence when temperatures are rapidly declining, whereby the winter wheat crop has the best chance to survive, overwinter, and become productive; one of ordinary skill in the art would thus be motivated to apply a composition comprising napropamide and an excipient to a locus where a winter wheat crop has been planted at a depth of 2.54-3.81 cm, but not yet emerged (pre-emergence), with the reasonable expectation that the method will successfully control a wide spectrum of weeds, including weeds of the genus Alopecurus, at the locus, and ensure winter wheat seedling quality and late period winter wheat production.
Further, it is a common phenomenon well known in the art that weeds, for whatever reason, can become resistant to certain herbicides. Ethofumesate is a well-known herbicide employed to control weeds such as blackgrass (i.e. Alopecurus myosuroides Huds) in a locus of a winter wheat crop (see e.g. Lockett et al., WIPO International Patent Application Pub. No. WO 2008/075065). Hence, one of ordinary skill in the art would thus be even further motivated to apply a composition comprising napropamide and an excipient to a locus where a winter wheat crop has been planted but not yet emerged (pre-emergence), with the reasonable expectation that the method will successfully control a wide spectrum of weeds, including weeds of the genus Alopecurus that have become resistant to ethofumesate, at the locus, and ensure winter wheat seedling quality and late period winter wheat production.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed January 20, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “Schroff teaches D-napropamide’s selectively enhanced activity against dicotyledonous weeds and only moderate activity against monocotyledonous weeds”; that “Shroff discourages reliance on napropamide alone to control monocot weeds such as Alopecurus and teaches away from the sole active ingredient limitation”; that “napropamide can cause some damage to the crops that it is intended to protect, i.e. it has a phytotoxic effect”; that “increasing the doses of napropamide-m in steps up to a maximum of 765 g/Ha lead to a very significant increase in phytotoxicity” and “it was further found that this phytotoxicity can be effectively managed by planting the crop at a depth of 2 cm or more”.
The Examiner, however, would like to point out the following:
1. First, it is noted that Shroff, the cited primary reference, alone discloses a method of controlling a weed at a locus where a crop has been planted but has not yet emerged (i.e. pre-emergence) comprising applying to the locus a composition comprising napropamide and an exicipient; wherein the composition can comprise (but does not necessarily comprise) one or more additional herbicides, the weed being controlled is e.g. of the genus Alopecurus, and the napropamide is D-napropamide and can be applied e.g. in the amount of 450-600 g/Ha.
2. Applicant, just like Schroff, is applying napropamide to a locus where a crop has been planted but has not yet emerged. Applicant is applying D-napropamide to the locus in the amount of 400-700 g/Ha; Schroff is applying e.g. D-napropamide to the locus in the amount of 450-600 g/Ha, which is not patentably distinct at all. In Applicant’s method, no monocot weed of the genus Alopecurus that is resistant to ethofumesate need be present anywhere at all in the locus at any time. In Applicant’s method, no monocot weed of the genus Alopecurus or of any other genus need be present anywhere at all in the locus at any time. Indeed, in Applicant’s method, no weed of any kind whatsoever need ever be present in the locus at any time. In Applicant’s method, just like in Schroff’s method, the crop has been planted but has not yet emerged. The crop can be in the form of seeds underground. The locus to which the napropamide is thus applied can simply be the ground, i.e. a plot of soil or dirt.
3. Therefore, Applicant’s method is simply not novel in view of the cited prior art. The actual concrete active step performed by the hand of man required by Applicant’s method is applying D-napropamide to a locus, in the amount of 400-700 g/Ha, which locus need not necessarily contain any weed of any kind whatsoever, and in which the crop is planted but not yet emerged. The napropamide is thus applied to the ground, i.e. a plot of soil or dirt. Schroff discloses effectively the same step, i.e. applying D-napropamide to a locus, in the amount of 450-600 g/Ha, which locus need not contain any weed of any kind whatsoever, and in which the crop is planted but not yet emerged. Applicant’s method is not a patentable advance simply because they state that their method can control a monocotyledonous weed of the genus Alopecurus. No matter how much Applicant may be thinking that their method is controlling a monocot weed while they are applying napropamide to the locus, this simply does not change the actual, concrete active step being performed. The thinking is really nothing more than an abstraction. Indeed, Schroff, who performs the same actual concrete, active step, must also be controlling a monocotyledonous weed of the genus Alopecurus just as well, even if Schroff does not explicitly disclose this or even knew about it. Hence, if Schroff is applying napropamide to a locus in a specific amount and thinking they are controlling dicot weeds, and Applicant is performing the exact same active step, i.e. applying napropamide to a locus in the same specific amount, but thinking they are controlling monocot weeds, the actual methods remain the same. The method is not made patentable simply by having different thoughts while performing the same active steps. If Applicant is to overcome the cited prior art, they will need to define a novel set of actual, concrete active steps to be performed by the hand of man.
4. Zhang discloses that napropamide can be applied to a winter wheat crop (i.e. a monocotyledonous crop plant) for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production. Clearly, then, one of ordinary skill in the art would understand that napropamide can be applied to a locus where a monocotyledonous crop plant, i.e. a winter wheat crop, has been planted but has not yet emerged (pre-emergent), and the napropamide will be expected to successfully control weeds at the locus without adversely affecting the monocotyledonous crop, such as the winter wheat crop. Indeed, if anything, this action will be expected to promote the desired monocotyledonous crop by ensuring winter wheat seedling quality and late period winter wheat production.
5. Shroff discloses a method of controlling a weed at a locus where a crop has been planted but has not yet emerged (i.e. pre-emergence) comprising applying to the locus D-napropamide e.g. in the amount of 450-600 g/Ha. Zhang discloses that napropamide can be applied to a winter wheat crop for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production. Wiersma discloses that planting winter wheat seeds at a depth of 1-1.5 inches (i.e. 2.54-3.81 cm; i.e. “at least 2 cm”) in the fall is recommended to allow for adequate moisture from rain, and to allow for faster emergence when temperatures are rapidly declining, whereby the winter wheat crop has the best chance to survive, overwinter, and become productive. Clearly, then, one of ordinary skill in the art in view of the cited prior art, would thus arrive at the claimed subject matter with a reasonable expectation of success. Specifically, one of ordinary skill in the art would understand from Schroff that napropamide can be applied to a locus at 450-600 g/Ha and not cause phytotoxicity to a winter wheat crop planted there which has not yet emerged. On the contrary, as just noted, supra, one of ordinary skill in the art would know that napropamide can be applied to a winter wheat crop (i.e. a monocotyledonous crop plant) for high weeding activity and a wide weed control spectrum, and ensures winter wheat seedling quality and late period winter wheat production.
For the foregoing reasons, the 35 USC 103 rejections are hereby maintained.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DAVID BROWE/Primary Examiner, Art Unit 1617